The Complainant is Dr. Ing. h.c. F. Porsche AG of Stuttgart, Germany, represented by Lichtenstein, Körner & Partners, Germany.
The Respondent is Mateusz Sikorski, Visionea Sp. z o.o. of Warsaw, Poland, self-represented. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with Key-Systems GmbH dba (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 19, 2015. On November 19, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 23, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Further to the Center's notification, the Complainant submitted its amended Complaint on November 26, 2015. On November 30, 2015, the Center received the Complainant's request for English to be the language of proceedings. On December 1, 2015, the Respondent agreed to this request.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint and the amended Complaint, and the proceedings commenced on December 3, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 23, 2015. The Response was filed with the Center on December 22, 2015. On December 23, 2015, the Center received a communication from the administrative, technical and billing contact for the Domain Name.
The Center appointed Nick J. Gardner as the sole panelist in this matter on January 6, 2016. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The key facts can be summarized as follows.
The Complainant is the well-known motor car manufacturer.
Besides manufacturing and distributing cars the Complainant has exclusively licensed its trademarks PORSCHE DESIGN and PD (see below) to Porsche Lizenz- und Han-delsgesellschaft mbH & Co. KG, Gronerstrage 5, 71636 Ludwigsburg, DE (the "Licensee"). This company, owned and operated by members of the Porsche family, is a designer and manufacturer of high quality consumer products, namely watches, luggage, briefcases, glasses, writing tools, knives, leatherwear, wallets, key-holders, organizers, golf accessories and shoes. The website of the Licensee is located at "".
PORSCHE DESIGN is a registered trademark in many countries including Poland (see for example European Trademark Registration No. 005832878, registered January 9, 2008). A stylized logo comprising the letters "PD" is registered in many countries, including Poland (see European Trademark Registration No. 005469572, registered September 18, 2008). These trademarks belong to the Complainant and are licensed to the Licensee.
The Respondent operates a business in Poland importing and selling items which it has purchased from the Licensee. It does so via a website located at the Domain Name. The Domain Name was registered on March 28, 2015.
The landing page at the Respondent's site contains a logo saying "Visionea" and another logo reading "P-D COLLECTION", then text which commences:
"Welcome to our Visionea - Porsche Design B2B studio (an online B2B studio with the most real way of making dreams come true) ! We are a professional intermediary offering signed by the logo and designed by visionaries of the Porsche brand accessories. All Porsche gadgets found in our Porsche Design reseller B2B studio are products of the highest quality, which for many years has been mainly attributed to cars of the brand. By purchasing in our B2B studio, you get a guarantee of originality and compliance with the highest quality standards, so rigorously pursued by the Porsche brand."
This website offers for sale various luxury items. It appears to be accepted that these are genuine Porsche Design products obtained from the Licensee (or at least the Complainant has not alleged they are anything else) and the Panel proceeds on this basis.
The Complaint sent a cease and desist letter to the Respondent on June 23, 2015. Subsequent correspondence has not resulted in any agreement. 5. Parties' Contentions A. Complainant
The Complainant's contentions are as follows.
The Domain Name is similar to its trademarks in which it has rights. The Complainant appears to rely upon its PORSCHE and PORSCHE DESIGN trademarks as well as its PD trademark. In the latter case it says the only difference is the addition of the generic term "store" and this change does not distinguish the Domain Name from the Complainant's PD trademark.
The Respondent has no rights or legitimate interests in the terms "Porsche Design" or "PD". There is no other meaning commonly associated with these terms other than in relation to the Complainant and its products (or those of its Licensee). The Complainant has not authorized the Respondent to use the terms "Porsche Design" and/or "PD". Even if the Respondent is carrying on business reselling the Licensee's goods the Respondent does not satisfy the tests laid down in Oki Data Americas, Inc. v. ASD, Inc.WIPO Case No. D2001-0903 (see discussion below) and cannot use the Domain Name for this purpose.
The Domain Name was registered and is being used in bad faith. Consumers are likely to be deceived and/or confused by the Respondent's use of the Domain Name, and the Respondent's registration and use of the Domain Name takes unfair advantage of the Complainant's trademarks and the Complainant's significant and longstanding reputation. The Respondent's actions wrongly suggest that the Complainant has authorised, approved, sponsored, or licensed the Respondent to use the PORSCHE DESIGN and/or PD marks and names. In addition the Respondent's website contains material copied without permission from the Complainant's or the Licensee's websites which is further evidence of bad faith. B. Respondent
The Response is somewhat repetitive and unclear in places but the main points made in the Response are as follows.
The Complainant's websites all use a different color scheme to that used by the Respondent.
Many of the trademarks relied upon by the Complainant are irrelevant.
The registered PORSCHE DESIGN logo and trademark have not been used by the Respondent as it uses "P" and "D" in a different format and layout and in uppercase letters whilst the registered "pd" logo is made of small letters.
The Respondent is an importer of genuine PD branded items into Poland and its web site describes itself accurately. It gives details of orders it has placed with the Licensee and correspondence it has had with the Licensee and says it has good relations with the Licensee and receives a significant discount on the Licensee's products.
The Respondent disputes that any materials on its website have been taken without permission from the Complainant's or the Licensee's website and says that it took all its own photographs.
It also says its website accurately displays its status and refers to a section headed "Trade and Conditions" and text which states "BUSINESS ACTIVITY OF THE SELLER We are a distributor offering new and original products purchased directly from the manufacturer for distribution, b2b, or individual sales." It also refers to a further section reading "Copyrights - All materials contained on this site, including text, graphics, icons, still and moving images, audiovisual works and software, are the property secured by the law. All the trademarks used on this website belong to their legitimate owners. Porsche Design logos, font and other Porsche trademarks belong to Dr. Ing. h. c. F. Porsche AG and Visionea has no rights to administer them. Visionea Sp. z o.o. does not have any rights to them, and they are presented for information purposes only.
Visionea Sp. z o.o. has not been affiliated by capital with the manufacturers of the products which it sells." 6. Discussion and Findings
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) The Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel agrees with the Respondent that many of the trademarks cited by the Complainant are not relevant and specifically that the Domain Name is not confusingly similar to the PORSCHE trademarks which the Complainant appears to rely upon. The Panel is also doubtful that the Domain Name is confusingly similar to the PORSCHE DESIGN trademark. However the Panel does not need to decide this as the Panel is satisfied that the Domain Name is confusingly similar to the PD trademark. This trademark is a device mark but the dominant features of the device are the letters "P" and "D", albeit in stylized form. The Panel finds that the Complainant has rights in the trademark PD.
Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy, "when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name" (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000‑0662). The Panel considers that the Domain Name includes the letters "PD", which are a similar approximation to the Complainant's PD trademark even though the stylized elements of that trademark are inevitably not present in the Domain Name. Once those elements are discounted the only substantive difference in the present case is the addition of the generic term "store". It is well established that the addition of a generic term (such as here "store") to a disputed domain name has little, if any, effect on a determination of legal identity between the domain name and the mark (see, e.g., Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the likelihood of confusion (see, e.g., PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189).
Accordingly, the Panel finds that the Domain Name is confusingly similar to the Complainant's trademark and, therefore, the first condition of paragraph 4(a) of the Policy has been fulfilled. Other issues that the Respondent relies upon about how it uses the term PD on its website, such as differences in color, font and layout do not negate this confusing similarity – the comparison to be made is between the Domain Name and the trademark. B. Rights or Legitimate Interests
The issue which arises in the present case is the question of the extent to which a non-authorised importer/seller of the Licensee's products can incorporate the Complainant's trademark in a domain name and then assert that because it deals in only genuine products of the Licensee it has established a legitimate interest.
The Panel considers that it may well be possible in such circumstances for such a importer/seller to establish a legitimate interest in a chosen domain name provided that other elements within the domain name make clear, either expressly or implicitly, to the reasonably well informed consumer of the Complainant's or the Licensee's products, that the domain in question is likely to be that of a non-authorised importer/seller. Conversely if the other elements within the domain name are not sufficient to convey the non-authorised status of the importer/seller, and hence the domain name conveys the impression (expressly or implicitly) that the domain name is that of the Complainant, or the Licensee, then it is unlikely to be possible to establish a legitimate interest. Exactly where the line is drawn is a question of fact and degree, to be assessed on a case by case basis.
In the present case the Panel considers that the Respondent fails to establish a legitimate interest in the Domain Name. It is simply the Complainant's trademark combined with a generic word "store" and is likely to be taken to be a domain name associated with the Licensee's business.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to the Respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
None of these apply in the present circumstances. The only one of possible relevance is (i). The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Domain Name. The Respondent no doubt chose the Domain Name because of the connection between the letters PD and the Licensee's business/products. It combined those letters with a generic word. This was then used to link to a website at the Domain Name selling the Licensee's products. That does not amount to use of the Domain Name for a bona fide offering of goods. The Respondent is no doubt entitled to deal in the Licensee's products. What it is not entitled to do is to use for this purpose a domain name which suggests that it is the Licensee, or is authorised by the Complainant or the Licensee. That is not a bona fide offering of goods. The fact that the Respondent may be supplied by the Licensee, may receive an attractive discount, and may, as it says, be on "good terms" with the Licensee does not matter - the Respondent has not suggested that the Licensee has given it permission to use the Domain Name, and its wider commercial relationship with the Licensee is irrelevant.
In reaching this conclusion the Panel has considered carefully the views of previous panellists as recorded in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"). Specifically under paragraph 2.3 this considers the question "Can a reseller/distributor of trademarked goods or services have rights or legitimate interests in a domain name which contains such trademark?" and states as follows:
"Consensus view: Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder. The respondent must also not try to "corner the market" in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles [i.e. the principles discussed in Oki Data Americas, Inc. v. ASD, Inc.WIPO Case No. D2001-0903]. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.
However: Some panels take the position (while subscribing to the consensus view) that it will generally be very difficult for a respondent to establish rights or legitimate interests where that respondent has no relevant trademark rights and without the authority of the complainant has used a domain name identical to the complainant's trademark (i.e., )."
In the present case the Panel notes the Respondent is an unauthorised importer/seller of the Licensee's products and believes that the applicability so-called "Oki Data" principles should be considered carefully. In the Oki Data case the Panel approved the earlier decision in R.T. Quaife Engineering, Ltd. and Autotech Sport Tuning Corporation d/b/a Quaife America v. Bill Luton,WIPO Case No. D2000-1201 finding that there was no bona fide offering because the domain name improperly suggested that the reflected site was the official U.S. website for Quaife, an English company. That seems to the Panel to be very similar to the position with the Domain Name – the domain name simply suggests the associated website is likely to be the online store of the Licensee. In addition, the Panel does not consider that the Respondent's website prominently discloses the Respondent's status. Although the Respondent has referred to certain wording all of these passages are found in subsidiary pages and are unlikely to be immediately apparent to visitors to the Respondent's website. In any event the wording in question does not seem to the Panel to be very clear – it refers for example to the Respondent as a "distributor offering new and original products purchased directly from the manufacturer" which might suggest an official distributor.
Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled. C. Registered and Used in Bad Faith
In the present circumstances, the Panel concludes that the Domain Name was registered and is being used in bad faith. It is a domain name which the Panel considers would be likely to be taken as associated with the Licensee's own business. The bad faith arises in the Respondent using a domain name in which it has no legitimate interest (see above) to attract possible customers who were looking for, or expecting, the Complainant or the Licensee. In the present case, the Panel concludes that the Respondent selected the Domain Name because of its association with the Licensee and its products. The website operated by the Respondent at the Domain Name is clearly promoting a business which supplies products that the Respondent has obtained from the Licensee and the Panel infers that the Respondent was by use of the Domain Name seeking to improperly suggest it had a connection with the Complainant or the Licensee in the course of trade, by suggesting that it was the Licensee's own business, or an authorised importer/seller of the Complainant's products. It is neither. As such its behaviour clearly amounts to that specified in paragraph 4(b)(iv) of the Policy as being evidence of registration and use in bad faith, namely "by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location".
Accordingly the Panel finds that the Domain Name have been registered and is being used in bad faith and hence that the third condition of paragraph 4(a) of the Policy has been fulfilled.
In the light of the Panel's conclusion it is not necessary for the Panel to determine various other matters the Complainant has raised, such as the alleged unauthorised copying of photographs (which the Respondent denies), the promotion of other business interests via the Respondent's website, and the content of another website operated by the Respondent. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, be transferred to the Complainant.
Nick J. Gardner
Sole Panelist
Date:January 20, 2016
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